Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 10-11 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 10 contains the phrase: “a magnet coupling the lid to the second member”. The Applicant points out the lid 140 is secured to a second member 120 by screws 180 which are covered by magnets ([0076]). Therefore, the flavor inhaler further comprising screws coupling the lid to the second member. The claimed “a magnet coupling the lid to the second member” is not supported by the instant application’s specification.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-9 is/are rejected under 35 U.S.C. 102 (a)(2) as being anticipated by Liu (WO 2016023177).
Regarding claim 1, Liu discloses a flavor inhaler comprising:
a first member (22) and a second member (12) that are coupled to each other at peripheral portions thereof to form a container for accommodating a content and each of which has a substantially quadrangular shape in a plan view with respect to the peripheral portions (see fig. 4); and first couplers (A) that couple the first member and the second member to each other; and
a lid (11, fig. 4) covering the second member so that the second member is between the lid and the first member,
wherein the first couplers (see fig. 5) are provided in the peripheral portions of the first member and the second member at a plurality of positions that are spaced apart from each other (see fig. 4).
Regarding claim 2, Liu discloses wherein the first couplers are provided in the peripheral portions of the first member and the second member at least at each of two sides that face each other (by reference sign A, fig. 4 and see fig. 5).
Regarding claim 3, Liu discloses wherein the content includes a battery for driving the flavor inhaler, and wherein at least one of the first couplers is provided in a vicinity of the battery (by reference sign 26, fig. 3).
Regarding claim 4, Liu discloses the first couplers are provided in a vicinity of each of two ends in an extension direction of the battery (by reference sign A, fig. 4 and the same feature toward reference sign 2, fig. 4).
Regarding claim 5, Liu discloses the content includes a heater (by reference sign 30, fig. 3) for heating a flavor generating article provided in the flavor inhaler, and wherein at least one of the first couplers are provided in a vicinity of the heater (see figs. 3-4).
Regarding claim 6, Liu discloses wherein the first couplers couple the first member and the second member to each other by using at least one of a screw and a latch (by reference sign 31, fig. 5).
Regarding claim 7, Liu discloses wherein the first couplers include the screw (by reference 18, fig. 3) and the latch (by reference A, fig. 4 and by reference sign 31, fig. 5), and wherein the flavor inhaler include a portion in which the screw and the latch are disposed alternately along the peripheral portions of the first member and the second member (see fig. 4).
Regarding claim 8, Liu discloses a supporter that is accommodated in the container and fixed to the first member to support the content; and a second coupler that couples the second member to the supporter (61 of fig. 12).
Regarding claim 9, Liu discloses the second coupler is spaced inward of the peripheral portions of the first member and second member.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 10-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Liu (WO 2016023177).
Regarding claim 10, Liu discloses using magnets for coupling the first member and the second (see fig. 12) and using screws for coupling the lid to the second member (see fig. 4). Since Liu discloses multiple ways of coupling bodies (including using magnets), it would have been obvious to one of ordinary skill in the art at the time the invention was made to use magnets (adding magnet body to the lid that interact with the magnet in the second member of Liu) for coupling the lid to the second member.
Regarding claim 11, Liu discloses a second coupler to couple the fist and the second member to each other spaced inward of the peripheral portions of the first member and the second member (see figs. 9 and 12); Liu discloses the magnet covers the second coupler (see fig. 12).
Response to Arguments
Applicant's arguments filed 3/12/2026 have been fully considered but they are not persuasive.
Applicant essentially that the amendment filed 3/12/2026 with newly added feature of “a lid covering the second member so that the second member is between the lid and the first member” distinguishes the claimed invention from the prior art of Liu. This argument is not persuasive because Liu discloses a lid (11, fig. 4) covering the second member so that the second member is between the lid and the first member.
Applicant also argues that dependent claims 2-11 are allowable because they recite further limitations which are not disclosed or made obvious by the applied prior art references. This argument is not persuasive as explained in the rejections above for those claims.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
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/PHU H NGUYEN/ Examiner, Art Unit 1747
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